Publications

From the registration of unconventional trademarks to increasing protection for well-known brands to new penalties for acts in preparation of counterfeiting. We publish the article written by Paola Gelato and Patrizia Franceschina of Jacobacci & Partners S.p.A. for ALLURE magazine of September 2019. To read the article, click on Read More.

The new varieties plants patents and their importance in the modern agricultural economy is the subject matter of the article written by Ms. Emanuela Truffo and published on the November number of Largo Consumo. To read the article, click on "Read More".

Under French law, different legal tools can be used to protect retail designs and layouts against imitation by indelicate competitors, either per se or for their contribution to the economic competitiveness of a business. Among these tools, author rights, industrial property rights and unfair competition claims can be efficient means to defend original and distinctive layouts against unauthorized copies. We publish here the article written by Jean-Mathieu Bertho and Aurélie Robert and published on the English web-based legal forum "Lexology"

On 10 January, the European Commission presented a proposal for a Regulation concerning the processing of personal data and the protection of privacy in electronic communications, aimed at repealing Directive 2002/58/EC . This proposal for a Regulation updates the legislation currently in force, providing better protection of confidentiality in electronic communications – including through the alignment of legislation with the new world-class standard provided in the recent EU General Data Protection Regulation (GDPR) – and consequently contributing to the creation of new useful tools to facilitate international data exchanges in the digital economy, and therefore to the development of the digital single market. We publish here the article written by Maria Roberta Perugini and published on the English web-based legal forum "Lexology".

The Centre for Information Policy Leadership launched a survey to assess the progress made by companies in the preparatory activities to the effectiveness of the EU Regulation on the Protection of Personal Data (GDPR). We publish a short description of the results and the link to the report

Among the topics of current interest in the field of protection of personal data are the limits on use of the information published on social networks, especially in view of the regulatory changes introduced by the EU General Data Protection Regulation ("GDPR").

We are pleased to share an article written by Ms. Maria Roberta Perugini, which identifies the consequences of this issue arising from the exception on the prohibition of "processing special categories of personal data" (Art. 9 GDPR) for cases where the processing relates to "personal data which are manifestly made public by the interested party "(paragraph 2, lett. e), recently published on the observatory's online blog on GDPR http://europrivacy.info".

By way of an immediately enforceable order dated September 21, 2016, the Court of Milan, Italy, rejected the appeal filed by Mr. Saverio Moschillo, Moschillo S.r.l., Biver S.r.l. and Gioia Milano S.r.l., confirming the first instance order dated June 20, 2016, prohibiting Mr. Moschillo and the above mentioned companies from using any trademark, name, denomination, domain name or signboard constituted by or including, the name “JOHN RICHMOND” or “RICHMOND”, in relation to any product or service, with effects extended to the entire territory of the European Union". We publish the article appeared on "Il Sole 24 Ore" of 29 September, last

The Court of Milan rules that the Italian National Tanning Industry Union is not permitted to maintain a monopoly over the use of the generic "cowhide logo" for leather goods, declaring the Italian mark invalidity, thus permitting operators in the leather goods sector to use the mark for their goods destined for the Italian market. We publish the article written for the English web-based legal forum Lexology: https://www.lexology.com/library/detail.aspx?g=08185081-6805-4830-bad2-ab7c911abe84

The French Court of Cassation has recently pushed towards better harmonization of the rules for determining the governing law in copyright and related rights disputes, both in space and in time.
Under French law, conflicts of laws rules that determine the existence and exercise of both copyrights and related rights of performers and/or producers of phonograms, are governed by the law of the country where protection is claimed on the date that the infringing acts occurred.
However, given that the French law is stricter on formal requirements for protection and is more protective than most foreign laws, these decisions create a significant degree of legal uncertainty. We publish the article written by Mr. Jean-Mathieu Bertho and Ms. Aurélie Robert published on the English web-based legal forum "Lexology": https://www.lexology.com/library/detail.aspx?g=d8c071de-c678-4b49-bbca-3db9ab598af6

In one of the first cases decided under the amended text of Section 133 of the Italian Industrial Property Code, the Czech antivirus company Avast recovers its domain name avast.it through an interlocutory order, before the (presumably long) court case on the substance of the matter is decided. We publish the article written by Mr. Massimo Introvigne and published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=3908d6cb-0f72-4d7e-a182-b1e00256d554

On April 16, 2014 the Court of Milan issued an interesting decision regarding 3-D trademarks that consist of trivial and/or generalized shapes. This decision concerned the well-known “Mikado” biscuits: the sweet breadstick shaped snacks partially covered with chocolate, which are registered as a three-dimensional trademark. Mondelez, the owner of Mikado sought to enforce these IP rights against Griesson De Beukelaer GMBH & CO. KG for allegedly producing and advertising some similar sweet breadstick shaped snacks that, like Mikado, were also partially covered by chocolate. The court dismissed the petition for preliminary injunction filed by Mondelez for the following reasons. As to the trademark infringement claim, the court stressed the point that the challenged trademark registrations were associated with a shape that was merely trivial and generalized (defining the relevant field broadly as “food”), though also functional, thereby implying that they were potentially invalid. Further, in the court’s opinion, the partial layer of chocolate on the snack cannot be considered a “distinctive” element of the trademark because it exists only to accommodate a precise function (that is, to enable the consumer to hold it without soiling their hands) and, as such, it is excluded from protection under art. 9 of the Italian Code of Industrial Property. This exclusion exists to avoid the risk of creating a monopoly over the product itself. The same reasons applied on the unfair competition claim (also dismissed). We publish the article written by Mr. Fabrizio Jacobacci and Ms. Carmen Castellano and published on the English web-based legal forum "Lexology": https://www.lexology.com/library/detail.aspx?g=838612d3-9be9-466c-b633-650593a032b6

On April and July 2013, the Civil Court of Turin issued two interesting decisions – in the frame of interim proceedings – concerning a look-alike case. In fact, the Court has expressly recognised that the packaging and the trade-dress of a product are composed of an overall combination and arrangement of design elements, including graphics, layout, colours and colour combinations that have, or in any case may acquire, significant distinctiveness in the consumer’s mind, due to extensive use of the product – with the relevant peculiar trade-dress -, thus effectively becoming a de facto/unregistered trademark. Defined as such, the packaging and trade-dress of the product are protected, according to Trademark Law and therefore may take advantage of all the tools offered by the Italian Intellectual Property Code, which are more effective – also from a procedural point of view – than those available, if unfair competition rules are applied. We publish the article written by Paola Gelato and Francesca Bego Ghina, published on the English web-based legal forum “Lexology”: http://www.lexology.com/library/detail.aspx?g=88e2bd38-d321-4b69-a52f-869c3501fba8

In March 2013, the Court of Turin issued a landmark ruling which invalidated the registration of certain trademarks connected to a well known charitable organization, stating that the registration of the trademarks at issue by the president of the charitable association was illegal because it occurred “in bad faith and with the aim to obtain unjust enrichment”. Further, because the trademarks were registered in bad faith, the Court voided a subsequent contract for sale of the same. We publish the article written by Lauren Keller and published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=6eadac71-a3f7-4232-9fa6-d07e46301acd

The Court of Justice of the European Union held, for the first time, that a claim based on abuse of dominant position can be enforced within the pharmaceutical sector. Indeed, the pharmaceutical market was previously exempt from enforcement of this kind of claim in order to promote research and innovation. We publish the article written by Luca Ghedina and Lorenzo Gyulai published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=0fe966ad-c01d-4eeb-b309-baf316b12d87

The Court of Turin issued two interesting judgments ordering the preventive attachment and freezing of bank account according to art. 144 and 144 bis of the Italian Code of Industrial Property and art. 162 ter of the Italian Copyright Law. The cited judgments represent an unusual manifestation of the abovementioned precautionary remedies. In the examined case the bank account freeze forced the opposite side to grant a bank guarantee as security for the payment of damages to be eventually liquidated on the merits. We publish the article written by Luca Ghedina and Lorenzo Gyulai published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=dc6a0666-7018-4fb1-8db8-6dc1ca966b0f

The Court of First Instance in Paris recently ruled that the sandals EXTREME DIOR created by Christian Dior was entitled to copyright protection as per French law, underlining that the originality of shoes was based in the combination of its characteristics notwithstanding the fact that each of the characteristics separately was banal or part of the public domain. We publish the article written by Jean-Mathieu Bertho and Olympe Vanner published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=808ca51f-3e98-4d04-9f1b-51d4df61798a

The Court of Turin recently issued an order prohibiting Nespresso Italiana SpA from giving information to the public regarding the interaction between E'SPRESSO coffee capsules made by Casa del Caffè Vergnano SpA and Nespresso coffee machines, and further ordering them to modify the Nespresso "U" machine instruction manual which previously stated that the device only worked with Nespresso capsules. We publish the article written by Nicoletta Galizia and published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=6b23ea0b-f55c-41d0-9f5c-418e0a5f18a4

In a twenty-year-old - and ongoing - case followed by Studio Legale Jacobacci & Associates, the Italian Supreme Court determined that 1) it is possible to bring an action against the same trademark in two separate cases, and 2) when it comes to demonstrating the infringement of complex marks establishing the imitation of the figurative element of the trademark is sufficient, even if the word element of the trademark is well-known and the infringer used the same figurative element with a completely different word. We publish the article written by Massimo Introvigne and published on the English web-based legal forum "Lexology": http://www.lexology.com/library/detail.aspx?g=70ef157d-b701-45e6-9d0b-69a1964bc92e

The court of Bologna declared the MST device trademark null and void on the grounds of likelihood of confusion and risk of association, both with regards to the well-known MS trademark, emphasizing that the graphic differences between these trademarks are not sufficient to avoid a strong impression of similarity which derives from the overlapping of the two letters “MS”. We publish the article written by Costanza Manavello and published on the English web-based legal forum "Lexology"

We publish the chapter "L'evoluzione del Product Placement" curated by Claudia Scapicchio and extracted from the 2011 Report on the market and the film industry in Italy on courtesy of Fondazione Ente dello Spettacolo (http://www.cineconomy.com/). The entire publication is available here